UPSTO Notice: Manual of Patent Examining Procedure (MPEP), Eighth Edition, August 2001, Latest Revision May 2004

From the Public Patent Foundation press release:

Committee Print to Amend the Federal Trademark Dilution Act, April 22, 2004. Oversight Hearing Before the Subcommittee on Courts, the Internet, and Intellectual Property, of the Committee on the Judiciary.

USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies

Patent 6,700,564 granted March 4, 2004 - Input device including a wheel assembly for scrolling an image in multiple directions:

Microsoft Wins One in IE Battle

An update on the Microsoft-Eolas patent dispute:

Patent Assignments on the Web was scheduled to be deployed on January 26, 2004 and indeed, here it is.

Microsoft spokesman Jim Desler is quoted in this Internet.com article in response to yesterday's patent infringement decision (1:99-cv-626), "We feel very good about our prospects on appeal. We remain steadfast in our belief that the Eolas patent is not valid. While the judge did not grant all our post trial motions, the court did accept some of our arguments and decided to stay the injunction pending our appeal."

This afternoon, Judge James B. Zagel, U.S. District Court, Northern District of Illinois (Chicago), refused to overturn a $521 million verdict against Microsoft, ruling in favor of Eolas Technologies Inc. in their web patent infringment dispute. The patent at issue is number 5,838,906, and is titled "Distributed hypermedia method for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document."

The United States Patent and Trademark Office (USPTO) issued a press release January 12 with the names of the ten corporations that received the most patents for 2003. Topping the list was IBM, for the 11th straight year, with Canon Kabushiki Kaisha a distant second, and Sony at number 10.

From the Washington Post's Jonathan Krim, this article Patenting Air or Protecting Property? reviews the growing criticism of the USPTO's patent process, and details the marked increase in lawsuits involving Internet-related technologies from companies that include high-profile Amazon, Microsoft, Blackberry, and eBay.

TechDirt posted on a patent awarded by the USPTO to Microsoft yesterday for a "Method and apparatus for writing a windows application in HTML."

Trademark Assignments on the Web System is Now Available on the United States Patent and Trademark Office Web Site:

In anticipation of widely reported plans for a initial public offering (IPO) in early 2004, Google is seeking a ruling from District Court in San Jose, California to determine whether keyword searches associated with advertising sold by the site constitute trademark infringement. (Google, Inc. v. American Blind & Wallpaper Factory, Inc. (Complaint) , ND Ca)

As an update to my September 22 posting OCLC Sues NYC Hotel Over Classification System, see this press release from OCLC, dated November 24, stating OCLC and The Library Hotel settle trademark complaint:

The USPTO granted patent 6,643,686 on November 4, 2003. It is "a system and method for circumventing schemes that use duplication detection to detect and block unsolicited e-mail (spam). InternetNews.com quotes the executive director of the SpamCon Foundation as seeing the technology as a "...potentially...effective tool against spam..."

On August 12, 2003 I posted that Microsoft Will Appeal $521M Patent Infringement Verdict. Today, InternetNews.com reported that Patent and Trademark Office (USPTO) examiners will undertake a new, thorough review of the patent on "a system allowing a user of a browser program on a computer connected to an open distributed hypermedia system to access and execute an embedded program object."

"The Trademark Trial and Appeal Board (TTAB) of the U.S. Department of Commerce's United States Patent and Trademark Office (USPTO) has expanded the options for electronically filing documents in trademark disputes. Using the Electronic System for Trademark Trials and Appeals (ESTTA) system, parties to a dispute now can file more documents electronically with the TTAB, including requests for extension of time to oppose and notices of opposition. Parties also can use ESTTA to file motions and other documents in inter-partes cases." [Link]

From the World Wide Web Consortium:

United States Patent 6,632,248, Customization of network documents by accessing customization information on a server computer using uniquie (note: the word unique is misspelled in the patent document itself) user identifiers.

Microsoft Confirms Changes to Windows, IE in Wake of Lawsuit:

AP reported yesterday that the non-profit Online Computer Library Center, Incorporated (OCLC) has filed a trademark infringement complaint (in the Southern District Court, District of Ohio, Eastern Division), against the Library Hotel, located in Manhattan. At issue is the hotel's use of the Dewey Decimal Classification system (owned by OCLC) as a theme to identify its rooms by specific categories. [thank you Roger!]

From the USPTO:

From the The Berkman Center for Internet & Society:
"UDRP (Uniform Domain Name Dispute Resolution Policy) Opinion Guide summarizes opinions of the UDRP panelists on various issues. In addition to questions about procedures, the Guide looks at elements necessary to establish trademark rights, what activities constitute "bad faith" and the nature of legltimate interests. The UDRP Opinion Guide has a Table of Contents followed by the text which will be in chapter, title, and section order."

From the July 24, 2003 Oversight hearing on "Patent Quality Improvement", this recently released Final Serial #38, 39 pages in pdf, includes the opening statements, testimony and prepared witness statements.

A new patent, 6,606,659, "System and Method for Controlling Access to Internet Sites," has been granted to Websense Inc., as reported via this press release, which indicates that the technology involved "allows organizations to optimize their employees' use of the Internet via administrative options that enable control over what Web sites may be accessed, at what time of day and for how long."

Judge Gerald Bruce Lee, of the US District Court, Eastern District of Virginia released a decision on September 5 that stated "Alas, we computer users must endure pop-up advertising," in the case of U-Haul International, Inc., v. WhenU.com, Inc., et al., Civ. Act. No.03-1469-A. Partial summary judgment had already been granted on June 23 against U-Haul, who was seeking to bar pop-up ads that orginated from WhenU.com in what U-Haul claimed was a violation of their trademarks and copyright.

IE Patent Loss Aftershocks Reverberate. This article indicates that in the wake of the recent $521 milllion patent verdict against Microsoft, the company will make unspecified changes to its IE browser.

Cryptome.org has a free link to this informative WSJ article from August 27, "A New Battleground In Web Privacy War: Ads That Can Snoop -Software Programs Track Where Users Go On Net, Then Target Them With Pop-Ups." Although certainly not a new story, it is nevertheless worth reading as it succinctly addresses privacy, copyright and trademark issues associated with spyware programs and consumer tracking applications, which can be associated with such frequent web activities as music downloading and online shopping.

Internet Search Companies Could Face Fight on Ads: "Some of the biggest Internet search services (Google and Overture) could be setting the stage for a legal battle with companies that object to the way these sites are using their trademarks." (thanks Donna)

GartnerG2 and The Berkman Center for Internet & Society at Harvard Law School released a study, Copyright and Digital Media in a Post-Napster World (46 pages, pdf), which addresses:

Microsoft loser in patent suit: $500 million verdict in Net case: "Microsoft was told by a jury to pay $521 million to the University of California and a Chicago-area company that claimed they invented technology used in the Internet Explorer browser."

From ZDNet: "A judge has ruled in favor of holding company NTP in its patent-infringement case against BlackBerry maker Research In Motion, awarding monetary damages and fees. The United States District Court for the Eastern District of Richmond, Va., ruled late Tuesday in the case brought against Waterloo, Ontario-based RIM. It awarded NTP $53.7 million."

From the New Yorker magazine, Patent Bending:

From the press release: "The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that effective June 30, 2003, all newly filed patent applications will be converted to electronic applications and processed electronically. Additionally, over the next 15 months, the USPTO will scan more than a half million pending applications into the electronic system." See the final rule in the Federal Register here.

Proposed rules changes to the Federal Acquisition Regulation (FAR), which constitute a Part 27 rewrite, were published in this May 28 Federal Register notice (pdf), and intend to "clarify, streamline, and update guidance and clauses on patent, data, and copyrights to provide a more logical presenation of this complex material." Also see the government's acquisition information website FAR, which provides links to the Current FAR (in HTML and PDF) and includes amendments from FAC 14 effective as of 05/22/03.

From AP: "A federal jury has ruled that eBay's model for selling fixed-price merchandise violates a patent filed by a Virginia attorney, a ruling that could force the online auction house to shed as much as a third of its total business. The decision: Mercexchange, LLC v. eBAY, Inc and Half.com, Inc., May 27, 2003 (pdf).

From the press release: "The House Judiciary Subcommittee on Courts, the Internet and Intellectual Property approved H.R. 1561, the United States Patent and Trademark Fee Modernization Act of 2003. The Department of Commerce’s U.S. Patent and Trademark Office (USPTO) is fully funded by user fees. The new fee structure contained in the legislation will fund USPTO’s 21st Century Strategic Plan, the agency’s five-year blueprint for improving patent and trademark quality and productivity."

A single global patent system could simplify the international patent process. Will the United States sign on?

See also the Technology Review Patent Scorecard 2003, (full-text available here in pdf), "which tracks the U.S. patent portfolios of 756 of the world's top technology companies."

An interesting article from News.com addresses the legal obstacles (DMCA, patent claims) at the disposal of established companies who seek to block emerging technology competitors.

Via Slashdot, this WTOP Radio Network (Washington, D.C.) report indicates that the USPTO has at a minimum a two year backlog for approval of a new patent. Patent Office Director James E. Rogan went on record to Congress warning that this backlog could rise to over one million requests by 2008.

Kevin W. Grierson comments: "Although the pendency period for patents is now over two years, it's not fair to say, as does the article, that there is a "backlog" of two years. The PTO's goal is to get a patent processed in 18 months. It would be difficult with no backlog at all to get one processed much faster than that. Right now, the time from application to issue, on average, is 27 months. That's too long, but it's not a two-year backlog."

On April 3, the Committee on the Judiciary: Subcommittee on Courts, the Internet, and Intellectual Property held a hearing on H.R. 1561, the United States Patent and Trademark Fee Modernization Act of 2003. The Committee provides links to the following:

A press release from the Electronic Frontier Foundation notes that a March 28 decision by the U.S. District Court for the Northern District of California reversed in part the court's March 22, 2002 order against Taxes.com directing the company to change content critical of its competitor J.K. Harris that appeared prominently in search engine results.

This United States Patent and Trademark Office proposed rulemaking seeks to implement a "beginning-to-end electronic processing of patent applications." The use of paper in the application process will be replaced by an imaging system to scan all documents and produce digital image files.

Professor of Computer Science Lee A. Hollaar has made available, at no fee, virtually the entire text of his treatise, Legal Protection of Digital Information, published by BNA. The Table of Contents provides direct links to each chapter and respective sections therein, which include the following topics: Copyright Overview, Software, Copyright, Digital Copyright, Patent Overview and Software Patents. This news is via UnivAtty.

On March 4, the Supreme Court released a unanimous decision in Moseley et al., dba v. V Secret Catalogue, Inc., et al., No. 01-1015, a trademark dilution case (Federal Trademark Dilution Act of 1995 (FTDA) at Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c). According to Declan McCullagh's article on the decision, "the justices effectively narrowed the scope of a federal trademark law that frequently is invoked in spats over domain names."

Google obtained its first patent from the United States Patent Office, on February 25, for a "method of identifying documents relevant to a search query."

The patent (6,526,440), abstract states, "A search engine for searching a corpus improves the relevancy of the results by refining a standard relevancy score based on the interconnectivity of the initially returned set of documents. The search engine obtains an initial set of relevant documents by matching a user's search terms to an index of a corpus. A re-ranking component in the search engine then refines the initially returned document rankings so that documents that are frequently cited in the initial set of relevant documents are preferred over documents that are less frequently cited within the initial set."

Check out Word Spy, a resource that provides definitions of new words and phrases, as well as ones already in use that have taken on new meanings. What makes the site especially interesting is that it includes 'example citations' for each entry that illustrate the use of the word or phrase in context (with a paragraph or more of an article), using references from major national and international news and journal sources.

This site apparently caught the attention of Google, whose trademark counsel sent the owner this correspondence on February 24. It states in part, "We ask that you help us to protect our brand by deleting the definition of "google" found at wordspy.com or revising it to take into account the trademark status of Google." Word Spy had used the word in question as a verb, as is now quite common in both conversation and online references. Perhaps this previous posting on Google is worth another look, as well as this article from PC Magazine, Is Google Invading Your Privacy? See also Protecting Google Brand "Tricky Business."

Forbes offers worried Blackberry users a review of alternative products which may come in handy in light of the current legal battle underway between Research In Motion and NTP.

As noted in my January 17 posting, BlackBerry parent Research in Motion is involved in a patent infringement dispute in the U.S. District Court for the Eastern District of Virginia with NTP Inc., that may result in an end to Blackberry's rein over the wireless handheld market. Today's New York Times reports that NTP Inc. filed new court documents last week citing Research in Motion's "unfair" lobbying of the Patent and Trademark Office to re-examine disputed patents in the case.

The USPTO held a hearing yesterday in accordance with the requirements of the Technology, Education and Copyright Harmonization Act of 2002 (known as the TEACH Act), Public Law 107-273. See my previous post here on this issue of protecting digitized copyrighted works that are used in distance education. Public comments from the Federal Register notice on the TEACH Act are here.

This month SBC Communications Inc. launched an effort to actively protect its patents on a "structured document browser," U.S. patent No. 5,933,841 and No. 6,442,574.

SBC sent a patent infringement notice to information education products website Museum Tour indicating that "any website which has static, linked information (top banners, menus, bottom banners) which are displayed while other sections of the page are displayed as non-static (the area where products appear on most websites) infringes upon the patents they hold.

Museum Tour has posted a web page with links to SBC's 34 page infringment notice here. As a related resource, see Dan Gillmor's blog associated with his column on SBC's patent claims. He is seeking instances of prior art, and is updating this blog with pertinent information on what will no doubt remain a newsworthy story for some time.

The House BlackBerry communication program, initiated in 2001, provided all members with the device, and paid for the associated e-mail service (to the tune of $6 million). The adoption of this wireless technology was related to the events of 9/11.

However, Congress is now caught in an uncomfortable position concerning its continued use of the Blackberries, as reported today by the Washington Post. A patent infringement case between BlackBerry's Canadian parent, Research in Motion (RIM) and NTP Inc., threatens to force the removal of the devices. In an unusual action, James M. Eagen III, Chief Administrative Officer, U.S. House of Representatives, requested that the parties seek a resolution allowing Congress to keep their Blackberries.

IBM announced that they now have a decade-long record for the most patents granted to one company (22,357). For 2002 alone, that number was 3,288 patents.

The National Intellectual Property Researchers Association (NIPRA), whose members "serve as the world's main concentration point for IP information disseminated by the USPTO," have sued the USPTO in District Court for the ED of Virginia. Their action was precipitated by the USPTO's project to transition from a paper document collection to an online access system. Audits of the program indicate substantial data error and loss associated with scanning documents for the new database, rendering the records incomplete and often unusable. See my previous posting on these problems here.

InstantMessagingPlanet.com reports that as a result of acquiring the Israeli company Mirabilis (in 1998) and their ICQ technology, telecom giant AOL has obtained a patent (see the text here) on instant messaging (IM) software. This patent could cause considerable problems for the respective IM apps from Microsoft and Yahoo.

The United States Patent and Trademark Office (USPTO) announced updates to its website that include new features, content and links as part of their e-gov initiative. Unfortunately, the agency has not made these enhancements in a manner that is readily apparent to users. However, there is an exception to these design problems in the new Independent Inventor Resources Web site that provides clear and direct access to useful brochures and data.

As I reported in November, the USPTO has undertaken an ambitious plan to transition to a paperless public access system. However, this new agency announcement indicates that there is now a greater understanding of the tremendous challenges inherent in this project, and the need to ensure that paper copies continue to be available to prevent a data gap.

This Information Week article reports on the huge advantage recently gained by Sony Corp. in the arena of digital rights management (DRM). Their strong position was established as a result of a licensing agreement with ContentGuard Inc., owner of a significant portfolio of DRM patented technologies.

The United States Patent and Trademark Office (USPTO) announced that they received 52% of their filings for the month of September electronically. This marks a milestone in the agency's e-government initiative to migrate filings from paper to online format.

Declan McCullagh reports that the Director of the United States Patent and Trademark Office, James E. Rogan, stated in an October 15 lecture at the Heritage Foundation that the tide has turned on the high acceptance rate for patent applications. Previously, 65-70% of applications were granted, and now that same percentage are rejected.

The lecture was titled "Reaffirming Intellectual Property Rights in an Information Age," but it appears that the text was not made available online either by the Heritage Foundation or by the USPTO.

This ZDNet article states that the Patent Policy Working Group's Royalty-Free Patent Policy has been approved, albeit not published in final version to date.

Attorney Martin Schwimmer launched his Trademark Blog in May, 2002. Via the blog you may access his SchwimmerLegaltrademark metasearch database that facilitates searches for marks in the United States, Finland, WIPO (Madrid), Canada, the UK, Japan, Hungary EC (CTM), Brazil and France that contain a specific search string.

The U.S. Patent and Trademark Office is making available for sale the complete collection of 65 million U.S. patents that were granted from 1790 to today, on a set of 423 DVDs.

Federal agencies are issuing their information quality guidelines as specified by OMB (see my previous posting here.)

The Patent Office guidelines are available at http://www.uspto.gov/web/offices/ac/ido/infoqualityguide.html. The Federal Register notice about these guidelines is here.

Akamai and Cable & Wireless have been contesting ownership of a patent for disseminating and routing Internet content.

Judge William S. Ostten of the U.S. District Court, Middle District of North Carolina, decided in favor of the University of North Carolina in a trademark case against Jack R. Erickson. Mr Erickson ran a now defunct porn website that infringed on the university's trademark, UNC.

BustPatents provides, "legal resources and tools for surviving the patenting frenzy of the Internet, bioinformatics, and electronic commerce." The site hosts a useful annotated list of national and international patent resources.

On July 24, 2002, the USPTO submitted a Report to Congress on the Removal of Classified Paper from the USPTO's Public Search Facilities. In response, the National Intellectual Property Association is seeking to stop the USPTO's systematic destruction of the world's largest paper collection of patent and trademark documents, which number in the tens of millions. In addition, the National Intellectual Property Law Institute has offered to be the custodians of the whole paper library of documents. In place of the paper documents, the USPTO is instituting an automated search and retrieval system, Examiners Automated Search Tool (EAST) and the Web Enabled Search Tool (WEST), that apparently is not up to the massive task at hand.